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[2017] COMPTRI 69
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Diageo Brands B.V. v Jony Walker Transport (Pty) Ltd (CT007Jun2017) [2017] COMPTRI 69 (30 August 2017)
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IN THE COMPANIES TRIBUNAL OF THE REPUBLIC OF SOUTH AFRICA
“The Tribunal”
Case Number: CT 007JUN2017
In the matter between:
DIAGEO BRANDS B.V. Applicant
AND
JONNY WALKER TRANSPORT (PTY) LTD Respondent
(2012/093319/07)
DECISION
INTRODUCTION:
[1] The applicant is Diageo Brands B. V., a Dutch company with its registered business address at Molenwerf 12 , 1014 BG, Amsterdam. The company forms part of the Diageo Group of Companies. This group of companies, of which the applicant forms part, is an industry leader in respect of alcoholic beverages, and trades in over 180 countries under iconic brands including Johnnie Walker, which, according to applicant, is one of its most successful brands, and is the subject of this application.
[2] The respondent is Jonny Walker Transport ( Pty) Ltd, a company duly incorporated and registered in terms of the laws of the Republic of South Africa, with registration number 2012 / 093319 / 07 .
[3] The applicant has submitted proof , in the form of a return of non - service on the respondent, by the Sheriff of the court, who made attempts to serve the application documents (form CTR 142 and affidavit) on the respondent on 15 June 2017 , without success. The respondent’ s address in Pietermaritzburg, KZN, could not be located. I am therefore satisfied that the requirements of S.142 ( 2 ) of the Regulations to the Companies Act 71 of 2008 (“ The Act”) have been duly complied with.
[4] The applicant has filed this application in terms of S. 11( 2 )( b)( i ii ) and ( c) ( i) of the Act, alleging that respondent’ s name, Jonny Walker Transport ( Pty) Ltd, is confusingly similar to the registered trade mark, JOHHNIE W ALKER, and that the registered owner of the trade mark has not consented to the use of the trade mark. The applicant therefore requests that the tribunal grant the relief sought, ordering the respondent to choose a new name.
Submissions by Applicant
[5] Applicant deposed to an affidavit as required by Regulation 142 ( 2 ), and submitted that it is the registered proprietor of the JOHNNIE W ALKER trade mark across the globe, including, inter alia, trade mark registration number 1917 / 01226 JOHNNIE WALKER in class 33 for whisky, filed on 11 July 1917 , and other JOHNNIE WALKER alcoholic beverages filed on various subsequent dates. The applicant trades in approximately 180 markets, with offices in 80 countries. It has made extensive use of its JOHNNY WALKER trade mark across the globe. With annual sales of over 130 million bottles, the applicant submits that the JOHNNIE W ALKER range is the biggest selling scotch whiskey brand in the world. The applicant further submits that the JOHNNIE W ALKER brand has become part of a global culture and has since become the biggest whiskey brand in the world and has become even more popular through recognition of its quality. The applicant submits that it has therefore acquired strong rights in the JOHNNIE W ALKER trade mark under the common law, in addition to its statutory rights, and that on this basis, the JOHNNIE W ALKER trade mark qualifies as a well - known trade mark in South Africa.
[6] The applicant believes that the respondent is attempting to benefit from the significant reputation that the applicant has built, and that there is a likelihood that the public, or a section thereof, might be misled by the similarity of the names under consideration, or where that there is a serious risk of confusion of the public.
[7] The applicant seeks that the tribunal consider S. 11 of the Act, with particular reference to S 11 ( 2), in granting the relief it seeks.
Application of the Law
[8] This is an application in terms of S. 160 read with S. 11 ( 2 ) of the Companies Act. The applicant seeks relief in terms of S. 160 ( 1 ) of the Act, which provides for specific remedies available in instances where the tribunal has determined that an application complies with the requirements of S.11 . I t states:
“ A person to whom a notice is delivered in terms of this Act with respect to an application for reservation of a name, registration of a defensive name, application to transfer the reservation of a name or the registration of a defensive name, or the registration of a company’ s name, or any other person with an interest in the name of a company, may apply to the COMPANIES TRIBUNAL in the prescribed manner and form for a determination whether the name, or the reservation, registration or use of the name, or the transfer of any such reservation or registration of a name, satisfies the requirements of this Act ( s 11 ).”
[9] Section 160 ( 2 )( b) which is relevant to this case, provides that an application in terms of subsection 1 above , may be made on good cause shown at any time after the date of reservation or registration of the name that is the subject of the application, in any other case.
[10] Section 160 ( 3 ) provides for the powers of the tribunal where subsections ( 1 ) and ( 2 ) have been satisfied. I t provides as follows:
“After considering an application made in terms of subsection ( 1 ), and any submissions by the applicant and any other person with an interest in the name or proposed name that is the subject of the application, the COMPANIES TRIBUNAL-
(a) Must make a determination whether that name, or the reservation, registration or use of the name, or the transfer of the reservation or registration of the name, satisfies the requirements of this Act ( s. 11 ); and
(b) May make an administrative order directing - ( i) The Commission to-
(cc) cancel the reservation of a name, or the registration of a defensive name.
(ii) a company to choose a new name, and file a notice of amendment to its Memorandum of Incorporation, within a period and on any conditions that the tribunal considers just, equitable and expedient in the circumstances, including a condition exempting the company fro m the requirement to pay the prescribed fee for filing the notice of amendment contemplated in this paragraph.”
[11] The tribunal is therefore tasked with considering this application and satisfying itself that it complies with the requirements of s. 11 ( 2) which provides:
“ The name of a company must-
(a) Not be the same as-
(iii) A registered trademark belonging to a person other than the company, or a mark in respect of which an application has been filed in the Republic for registration as a trade mark or a well- known trade mark as contemplated in section 35 of the Trade Marks Act, 1993 ( Act no. 194 of 1993 ), unless the registered owner of that mark has consented in writing to the use of the mark as the name of the company.”
(b) Not be confusingly similar to a name, trade mark, word or expression contemplated in paragraph ( a) unless-
(iii) In the case of a name similar to a trade mark or mark referred to in paragraph (a)( iii), the company is the registered owner of the business name, trade mark, or mark, or is authorised by the registered owner to use it.”\
(c) Not falsely imply or suggest, or be such as would reasonably mislead a person to believe incorrectly, that the company-
(i) Is part of, or associated with, any other person or entity.”
[12] Section 11 lists the criteria applicable for company names. On assessment of applicant’s name and that of respondent, one can easily identify the similarity in the names. Both applicant name JOHNNIE W ALKER and respondent name JONNY W ALKER are the same name. While they may differ slightly in spelling, the pronunciation and sound ( aurally) is the same. In essence, there is resemblance between the two. I t is apparent that the dominant and striking feature in respondent’s name JONNY WALKER TRANSPORT ( PTY) LTD is JONNY W ALKER. The dominant
feature JONNY WALKER is virtually identical to the applicant’ s JOHNNIE W ALKER, as submitted by the applicant.
[13] The applicant has submitted further that it has not consented, in writing or otherwise, to the use of its trade mark or a confusingly similar mark by the respondent.
[14] As the Act requires, the name must not be the same or confusingly similar to a registered trade mark registered in terms of the Trade Marks Act, unless the owner has consented in writing that the mark can be used as a company name. In Kreditbank van Suid – Afrika v Registreur van Maatskappye 1978 ( 2 ) SA 644 (W ) at 651 , the court refused an application under S. 48 of the 1973 Companies Act, challenging an order by the Registrar ( now Commissioner) that a company change its name as being undesirable. It was held that the name could lead to nconfusion, both in South Africa and overseas, with the trade name of certain foreign companies which, although not registered as companies in South Africa, did do business in SA.
[15] Applicant has established that JOHNNIE W ALKER brand is a global brand that has invested billions on the promotion of the brand. It has made extensive and continued use of the JOHNNIE WALKER trade mark throughout the world, including SA, through most forms of media. The JOHNNIE WALKER brand has indeed been infused into the South African culture and is well- known. There is a serious risk of confusion of the public, which causes the undesirability of the name JONNY W ALKER. In Azisa Pty) Ltd v Azisa Media CC [ 2002 ] 2 All SA 488 ( C) at 500 , the court held that a company name may be deemed undesirable in circumstances where it is likely to mislead or deceive the public, or is the same or similar to that of another and as a result is likely to lead to confusion amongst member s of the public. In New Media Publishing ( Pty) Ltd v Eating out Web Services CC 2005 ( 5 ) SA 388 ( C) at 394 , relating to the Trade Marks Act on name similarities, the court held:
“there is, it seems to me, an interdependence between two legs of the inquiry: the less the similarity between the respective goods or services of the parties, the greater will be the degree of resemblance required between the respective marks before it can be said that there is a likelihood of deception or confusion in the use of the allegedly offending mark”
[16] Indeed, the notional customer will, in all probability, remember JONNY W ALKER as the name of the organization where goods can be purchased at a store with JOHNNIE W ALKER as its name.
[17] This application is comparably similar to the application of Diageo Brands B. V. v Jonny Walker Fast Food ( Pty) Ltd ( case no. CT 009 JUN2016 ), wherein the tribunal held that:
“Although JOHNNIE and JONNY are not spelled the same, they do compare aurally. The spelling does visually differentiate between the two. We have to look at the notional customer and how such a customer would remember both names.
When considering the notional customer, comparing the names and marks and how the names are viewed as they are encountered in the marketplace ( the names will not be kept side by side), I agree with the applicant that the notional customer will in all probability remember JOHNNIE WALKER as the name of the organization.”
[18] The tribunal further concluded, as I concur, that JOHNNIE WALKER is the dominant feature and is the main idea or impression left in the mind of the customer.
FINDINGS
[19] The name JONNY W ALKER is confusingly similar to JOHNNIE WALKER FAST FOOD and there is a reasonable likelihood of confusion.
[20] JOHNNIE W ALKER is a well- known trade mark and applicant has not consented to the use of the mark as the name of respondent.
ORDER:
It is therefore ordered that:
- The Respondent chooses a new name that is not similar to the JOHNNIE W ALKER trade mark owned by the applicant;
- In light of the non- service of application documents on the respondent due to unlocated address, the CIPC is ordered to cancel or alternatively, change the name of the respondent.
________________
B. Zulu
30 August 2017